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A key publication for patent owners, litigators, and IP professionals operating in today’s global economy, Patent Office Litigation is a two-volume set focused on the new contested proceedings under the America Invents Act. This book examines how the proceedings interact with other aspects of patent procurement and enforcement, and delivers practical analysis and advice. To order your copy of Patent Office Litigation today, click here.

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Patent Office Litigation Update: Multiple Proceedings at the USPTO

The America Invents Act recognizes the very real possibility of multiple contested proceedings at the U.S. Patent and Trademark Office involving the same patent. In this video, Rob Sterne explains how these multiple contested proceedings involving the same patent work in practice.

Patent Office Litigation Update: Design Patents

Interest in design patents is increasing, in part, because they can be obtained relatively inexpensively and quickly. As a result, design patent owners who enforce their patents are likely to see an increase in post-grant challenges against them at the United States Patent and Trademark Office. Mark Rygiel provides an update to current design patent challenges before the USPTO. He explains each of the new post-grant procedures created under the America Invents Act and identifies trends with each type of challenge.

Patent Office Litigation Update: Stays

In this video, Rob Sterne discusses the important issue of litigation stays in both the District Courts and the U.S. International Trade Commission. He provides several predictions for how stays will play out in relation to the new contested proceedings, and how judges will evaluate stay requests.

Supplemental examination is a new proceeding that a patent owner can bring at U.S. Patent and Trademark Office that is used to address issues involving patentability of claims of issued patents. Rob Sterne explains the interplay between supplemental examination proceedings that can be filed by the patent owner involving its own patent and an inter partes review that can be filed by a challenger against the same patent at the new Patent Trial & Appeal Board.

Under the new contested proceeding rules, a patent owner or a third-party requester can file an ex parte reexamination request. In such cases, an interview at the U.S. Patent and Trademark Office Central Reexamination Unit (CRU) is absolutely essential for success. In this video, Rob Sterne explains how to successfully conduct an oral interview at the CRU in an ex parte reexamination.

The Patent Trial and Appeal Board has published six representative decisions and orders that deal with discovery and evidentiary issues in inter partes review proceedings. In this video, Jon Wright reviews those six decisions and explains the four important points the Board wants practitioners to know.

Patent Office Litigation Update: Patent Zombies

In the nine months since the new contested proceedings became operational at the United States Patent & Trademark Office, over 300 Inter Partes Reviews and Covered Business Method proceedings have been petitioned at the new Patent Trial and Appeal Board. The new proceedings can catch unaware patent owners off guard, rendering them “patent zombies” who are already dead in terms of their patent enforcement strategy. Rob Sterne gives the five facts every accused infringer needs to know when contemplating the use of the new contested proceedings.

Oral Arguments Before PTAB

Oral arguments before the USPTO’s new Patent Trial & Appeal Board are a vital part of the new contested proceedings that present new challenges for patent practitioners. Robert Greene Sterne addresses the process of requesting and delivering an oral argument. To illustrate, he outlines his own preparation strategy and his method for delivering clear, effective, and successful presentations.

Patent Office Litigation Update: Impact on Timing

Don Banowit explains two recent clarifications to the deadlines for filing a petition for inter partes review at the USPTO. Specifically, a petition must be filed within one year of service of the complaint alleging infringement of the patent, and cannot be sought during the first nine months of a patent’s issuance.

The Perfect Patent Office Litigator

Robert Greene Sterne, March 29, 2013

Robert Greene Sterne describes the perfect patent office litigator to handle the new contested proceedings under the America Invents Act. In order to successfully argue a case before the new Patent Trial & Appeal Board (PTAB), an attorney should have previous experience in areas including reexaminations, interferences, and District Court litigation. Of note, the PTAB has different rules and regulations that can pose significant challenges to attorneys unaccustomed to prior and new patent office contested proceedings.

The Perfect Patent Office Litigator

Robert Greene Sterne describes the perfect patent office litigator to handle the new contested proceedings under the America Invents Act. In order to successfully argue a case before the new Patent Trial & Appeal Board (PTAB), an attorney should have previous experience in areas including reexaminations, interferences, and District Court litigation. Of note, the PTAB has different rules and regulations that can pose significant challenges to attorneys unaccustomed to prior and new patent office contested proceedings.

Lessons Learned from Contested Proceedings at the USPTO

Eldora L. Ellison, Ph.D., discusses lessons learned from pending inter partes review and covered business method patent review proceedings. Primarily, she says, patent owners should be aware that their competitors are willing to use such proceedings to challenge a patent, particularly when there is related litigation. In the pending proceedings, the Patent Office has shown a propensity to institute trial. They have also demonstrated a tendency to deny unpatentability grounds on claims that are redundant, presented in a vague manner, or are based on art that is cumulative with other art. In all cases, the Patent Trial and Appeal Board has focused on the core patentability issues.

PTAB Judges and Hearings at the USPTO Satellite Offices

Robert Greene Sterne explains the process of recruiting and selecting judges to staff the new Patent Trial & Appeal Board and the USPTO’s satellite offices in Denver, Detroit, Dallas, and Silicon Valley. With a large number of new Administrative Patent Judges with excellent legal and technical backgrounds, the USPTO hopes to begin clearing the backlog of cases over the next few years.

Patent Office Litigation Update: Stays at the US District Court

Don Banowit discusses the interface between district court patent litigation and contested patentability challenges at the USPTO. Under the America Invents Act, inter partes review and covered business method patent review proceedings are available to challenge the patentability of an issued patent. Given the speed with which these proceedings are required to be conducted, as well as the higher standards for institution, he predicts that there will be more incentive for judges to stay current patent litigation and discusses two recent cases involving stays.

Patent Office Litigation Update: Observations from Early Decisions

Decisions from the first inter partes review proceedings are beginning to flow from the Patent Trial & Appeal Board. Jon Wright has examined the early decisions to get a sense of how the Board is proceeding in these matters. In this video, he presents several observations on claim construction and expert testimony, as well as his opinion on the quality of the Board’s decisions.

The Decision Maker’s Guide to New Contested Proceedings Under the AIA

Under the America Invents Act, a patent owner has many tools available when considering contested proceedings. Some of those options include inter partes review, covered business method review proceedings, supplemental examination, and ex partes reexamination. In this video, Rob Sterne outlines his “Decision maker’s guide to these proceedings” and discusses when each of these contested proceedings might be appropriate for the patent owner or accused infringer.